CENTURY 21 REAL ESTATE LLC v. CENTURY 21 TOWN PLANNERS PVT LTD AND ANR
Rectification of Trade Mark Register Due to Dishonest Adoption and Prior Trans-border Reputation of Global Real Estate Brand.
Court: Bombay High Court
Citation: 2026:BHC-OS:6096
Decision Date: 06-03-2026
List of Laws
The Trade Marks Act, 1999; The Trade Marks Rules, 2017; Trans-border Reputation; Rectification of Register; Section 2(2)(c) - Definition of Use of a Mark
- Facts: The Petitioner, Century 21 Real Estates LLC, is a global real estate franchising giant incorporated in 1971, holding registrations for the mark "CENTURY 21" in over 140 countries and in India since 1989. The Petitioner also uses "C21" as a well-known abbreviation. Respondent No. 1, Century 21 Town Planners Pvt. Ltd., incorporated in 2006, obtained four registrations for the mark "C21" (device) in 2010, claiming user since 2007. The Petitioner sought rectification of the register to remove the Respondent's marks, alleging that the Respondent's adoption was dishonest, aimed at trading upon the Petitioner's global reputation, and that the marks were deceptively similar to the Petitioner's prior marks.
- Procedural Posture: The case reached the Bombay High Court through several Commercial Miscellaneous Petitions filed under the Trade Marks Act, 1999, seeking the removal of the Respondent's registered marks from the Register of Trade Marks.
- Issue: Whether the Respondent’s adoption of the "C21" marks was bona fide and whether the Petitioner established prior use and trans-border reputation in India sufficient to justify the rectification of the Respondent's registrations.
- Holding: Yes, the Petitions were allowed. The Court ordered the removal of the Respondent's four "C21" registrations from the trade marks register.
- Reasoning: The Court reasoned that the Respondent failed to provide any explanation for adopting a mark identical to the Petitioner's abbreviation while also subsuming the Petitioner's "CENTURY 21" mark into its corporate name. This silence indicated a lack of bona fides and a deliberate attempt to "clone" the Petitioner. Evidence showed the Respondent’s user claim of 2007 was false, as their earliest documents dated only to 2010. Conversely, the Petitioner proved prior statutory rights in India since 1989, substantial trans-border reputation through international use since 1971, and active Indian market penetration via franchise agreements and domain registrations from 2006-2007. The Court emphasized that "use of a mark" under Section 2(2)(c) of the Act includes the availability of services and market presence, not just direct sales. Furthermore, the Respondent could not "approbate and reprobate" by claiming its marks were distinctive while simultaneously arguing the Petitioner's similar marks were generic.
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